


t^l^ ^1 



: S . Cd'i'^r^ ' •' '^ /io m I it *.e. 



The following Bill for the re-extension of the Patent of 
William Woodworth, originally issued on the 27th 
day of December, 1828, pass ed both houses of Con- 
gress on the 25th February, 1845, to take effect from 
and after the 27th day of December 1849 .• 

n^sr-i s. 121. 

IN SENATE OF THE UNITED STATES. 

February 10, 1845. 

Mr. Phei.i's, from the Committee on Patents and the Patent Office, re- 
ported the following bill ; which was read, and passed to a second read- 
ing. 

A BILL 

To extend the patent heretofore granted to William 

WOODWORTEI, 

Be it enacted by the iSenate and House of Represen- 
tatives of the United States of Am,erica in Congress as- 
sembled, That the patents granted to William Wood- 
worth, on the twenty-seventh day of December, in the 
year one thousand eight hundred and twenty-eight, for 
Ms improvement in the method of planing, tonguing, 
grooving, and cutting into mouldings, or either plank, 
boards, or any other material, and for reducing the same to 
an equal width and thickness, and also for facing and 
dressing brick, and cutting mouldings on, and facing seve- 
ral other substances, a description of which is given in a 
schedule annexed to the letters patent, granted as afore- 
said, be and the same is hereby extended for the term of 
seven years, from and after the twenty-seventh day of De- 
cember, in the year one thousand eight hundred and forty- 



nine ; and the Commissioner of Patents is hereby direei3-^ 
ed to make a certificate of such extension in the name of 
the administrator of the said William Woodworth,. 
and to append an authenticated copy thereof to the origi- 
nal letters patent, whenever the same shall be requested 
by the said administrator or his assigns. 

Which Bill having been signed by the President,, be- 
came a law. 



The following is the Opinion of the Hon. Daniel. 
Webster, late Secretary of State of the United States^ 
upon the construction of the eighteenth section of the 
Act of Congress o^f July 4, 1836. 

aUESTION. 

Does the extension of a patent under the Act of Con- 
gress of the 4th of July, 1836, accrue to the benefit of the 
inventor or patentee, his executors and administrators, or 
does it extend for the term of the extension, the rights and 
privileges of assigness, under the original patent? 

I had occasion to consider this question last year, and 
came to the conclusion that unless in the assignment itself 
provision was made that the assignee should have an in- 
terest in any extension of the patent, which might after- 
wards take place, his right terminated with the original 
Patent. I am still of that opinion. 

It appears to me that an opposite construction would de- 
feat the main object of the 18th Section of the Act of Con- 
gress. The object of that section is to secure to the Pa- 
tentee, a reasonable remuneration for the time, ingenuity 
and expense bestowed on the invention, and the introduc- 
tion of it into use. An account is to be taken under oath^ 
of loss and profit accruing to him by reason of such mven- 
ton. The loss may be any loss which may happen with- 
out neglect or fault on his part ; and the failure or bank- 
ruptcy of assigness, by which he may have lost a part — 
perhaps the greater part of his expected profit, may itself 
be a loss within the provision of the law. 



Hs-*fni5^ 



3 - ' (^ 3 

Trie whole expense is to be borne by the Patentee, and 
it is quite optional with him whether he will apply for an 
•extension or not. The assignees cannot compel him to 
^pply for an extension, nor apply themselves, in his name 
without his assent ; nor can they apply in their own name. 
This shows that they have no pre-existing right to an ex- 
tension. The privilege to be derived from an extension is 
not that for which the assignees have paid their money, or 
any part of their money. They have bought nothing but 
■an interest in the original patent. 

The case would be free of doubt, I think, but for the 
latter clause of the 18th Section, which declares that the 
benefit of the renewal shall extend to assignees according 
to their interests therein. Their interest in what ? Clear- 
ly in the extension, as I think, and they may have an in- 
terest in the extension ] that is, they may have stipulated 
originally for the benefit of an extension, if any should be 
granted. 

Or if the terms Hheir interest therein^^ be considered 
to mean their right to use the thing patented, the result is 
the same, because the extent of their interest on their pur- 
■chase, if they have purchased the right of using the 
thing patented, for fourteen years, and a privilege of fur- 
ther use, in case of extension, then of course the right con- 
tinues. But if they have purchased the right for fourteen 
years only, then they have no interest in the extension 
and no interest in the use of the thing patented. 

This construction, as it seems to me, gives a sensible 
meaning to all parts of the provision of this 1 8th Section, 
while a different one would defeat the main purpose in- 
tended by it. I cannot therefore hesitate to adopt it. 

DANIEL WEBSTER, 



OPINION OF THE HON. SAMUEL PHELPS. 

i,ate a Judge of the Supreme Court, and a Senator of the United States 

from the State of Vermont. 

My opinion is desired as to the true construction of the 
18th section of the act relating to Patents, approved on the 
4th of July 1836, and particularly as to the effect of the 
following clause introduced near the conclusion of the sec- 
tion, viz. " and the benefit of such renewal shall extend to 
assignees and grantees of the right to use the thing patent- 
ed, to the extent of their respective interests therein." 

This clause has it seems received from gentlemen of high 
legal reputation, including some of the Judges of the (Su- 
preme Court, not only different but inconsistent and con- 
flicting constructions. On one hand it has been contended^ 
that an assignee, or grantee of theright secured by the patent 
takes by virtue of this Clause the same right and interest 
in the extended patent which he had in the original^ 
and that by force of the statute alone, without refer- 
ence to the interest of the parties as it may be gath- 
ered from the contract. Those who adopt this construction 
consider the expression " to the extent of their respective 
interests therein," as having reference, not to the duration 
but the quantum of interest assigned or granted, and as 
intended merely to distinguish between an assignment of 
the whole right and interest of the patentee on the one hand, 
and, on the other, of a fractional or aliquot part of that 
right, — an interest limited to a particular territory, and an 
interest limited to a particular mode of employment as a 
mere right to use the thing patented, to make and use 
without the right to vend, or to make and vend without a 
right to convey the exclusive privilege to others. 

Another class adopt the contrary construction, and insist, 
that an assignee or grantee of a right or interest in the orig- 
inal patent takes nothing in the extended patent, unless 
his contract gives it to him, either expressly or by fair le- 
gal intendment. They understand the word interest as 
used in the statute in its most comprehensive sense, and as 
importing not merely the quantum or extent of his right 



in the original patent, but a right in the extended patent as 
such, created by some act of the patentee. They therefore 
argue, that, if he have acquired from the patentee, no right 
in the extended patent there is no interest upon which the 
clause can operate. They say that if the right originally 
conveyed be limited by the parties, in its duration, to the 
term of the original patent, the interest ceases with that 
term ; — that the purchaser, has no interest in the extended 
patent, and that " to the extent of his interest therein" 
means to no extent at all. 

There is still a third construction given to this clause 
which takes a medium between the two extremes. Those 
who adopt it distinguish between an assignment of the pa- 
tent either in whole or in part, and a mere right or license 
to use the thing patented. They hold that the effect of the 
clause we are considering is limited to the latter ; — that all 
conveyances of the exclusive right under the first patent, 
whether in whole or in part, whether to be held in com- 
mon with the patentee, or solely and exclusively within a 
particular district, cease to have effect by the expiration of 
the original term unless the contrary was intended by the 
parties, but that the statute does give to a contract for the 
use merely an extension and effect beyond what the par- 
ties contemplated, and does protect the purchaser in the 
continual enjoyment of that right beyond the period for 
which it was originally purchased. 

It is much to be regretted that a clause having so im- 
portant a bearing upon the operation and effect of the Act, 
and involving such important considerations, should have 
been so equivocally expressed ; and that a statute confer- 
ring exclusive privileges often of great value, should have 
left it a matter of doubt, uncertainty and litigation, to 
whom those privileges belong. It certainly was an easy 
matter to have given to this clause a form which would 
have expressed, in language free from doubt or ambiguity, 
the provisions which are attributed to it by either of the 
constructions mentioned. 



I confess that in endeavoring to form an opinion as to 
the intent of Congress in this portion of the act, 1 have de- 
rived very little aid from criticising its phraseology. Had 
that intent been to give to the Assignee, &c., by force of 
the renewal, the same interest in the extended term which 
he held in the original patent by contract with the patentee, 
it was easy to say so. On the contrary, if the intent had 
been to give the benefit of the renewal to those only who 
had derived from the patentee an equitable interest in the 
renewal, it might have been as easily expressed. The act 
does in express terms extend to assignees and grantees ; but 
then comes the qualifying clause, " to the extent of their 
respective interests thereinP Now as between the two 
constructions first mentioned, the whole controversy hangs 
upon the import of this qualification, and that import de- 
pends upon the precise meaning which we attach to the 
word ' interest.^ That word is susceptible of a more en- 
larged or limited meaning. In general, the term in its 
technical import includes all the elements or ingredients 
which serve to make up a legal estate or interest. Of these 
time or duration is often essential. It is so clearly when, 
from the nature of the property, its value depends upon 
duration, and with respect to the exclusive right secured 
by a patent, the original limitation of it to fourteen years 
and the subsequent extension of it to twenty-one years, 
shows that in all cases, so long as the right exists, its dura- 
tion is an important element of value. The word may 
indeed have a more restricted and limited signification ; but 
as a general rule, I think a word should be understood in 
its more comprehensive sense, unless there be something 
in the context to qualify its import. I see nothing in this 
instance to have that effect. The object of the act is indeed 
to revive and resuscitate a right about to expire by lapse of 
time, and thus to prolong it for the benefit of all interested, 
the question still recurs, who has an interest ? And how 
can he be said to be interested whose right has expired by 
its own limitation ? 



There is another difficulty in the phraseology of this 
clause. Whether the word HhereirC has reference to the 
'■thing 'patented) or the h^ighf to use it, or to the '■renewaV 
is not very clear. Here are three antecedents to which 
it may apply. If it be applied to the last antecedent, the 
language would not be very accurate. What is the thing 
patented ? The patented machine ? If so it is difficult to 
affix any definite meaning to the expression. Is it the in- 
vention or discovery ? If it be the language is not legally 
correct. The interest of the patentee or his asignee con- 
sists in the exclusive privilege created by the patent. It 
is this right which constitutes the legal property, and which 
is the object of the contract which creates the right of the 
purchaser.- We must go back to the word ^^righf^ for an 
antecedent. The provision will then read thus, " the ben • 
efit of the renewal shall extend to assignees, &c. of the 
right to use, <fcc., to the extent of their respective interests 
in that right," or in the exclusive privilege. Here then is 
a reference to a right supposed to exist antecedent to and 
independent of the extension. How is that right to be 
measured? By the contract which creates it. And if by 
that contract it has expired by the limitation originally 
given it, it exists no longer. But it is insisted that in ascer- 
taining that right, we are to exclude the consideration of 
the limitation in point of time, measure it in other particu- 
lars, and give it new life and duration. I admit this con- 
struction may be forced upon the statute, but it does not 
result from the language employed. We may indeed beg 
the question, — assume that such was the intent of the legis- 
lature, and warp the language to it. But such an expedi- 
ent should never be resorted to, unless we are driven to it, 
nor unless the whole act, considered with reference to its 
subject matter and its obvious purpose, clearly establishes 
that intent. 

In pursuing this subject, I propose to divide the enquiry, 
and to consider, first what is the inference to be drawn 



from the act itself, regarding it as establishing a system of 
regulation on the subject ; and secondly, what is its inci- 
dental effect upon transactions originating under other and 
different regulations. 

It appears to me that much embarrassment has arisen 
from not noting this distinction. The act itself proposes 
an entire new system to be substituted for all previous laws, 
and therefore professes to furnish b. perfect system. Hence 
it repeals " all acts and parts of acts heretofore passed on 
the subject," with a saving only of suits either at law or in 
equity pending at the time of its passage. Its particular 
provisions therefore must be regarded as having reference 
primarily and principally to the system established by it, 
and if regard is had to past transactions, it is only with 
reference to its incidental effect upon them. 

One of the most satisfactory and rational rules of con- 
struction is to consider the object of the statute as disclosed 
upon its face. 

The I8th Section of the Act provides for the renewal of 
patents. And in the outset it gives the right to the patentee 
only. No notice is here taken of an assignee. It provides 
that the patentee shall furnish to the commissioners a state- 
ment of profit or loss accruing by means of his invention. 
And further that, if upon a hearing of the matter, it shall 
appear to the full and entire satisfaction of the board, hav- 
ing due regard to the public interest therein, that it is just 
and proper that the terms of the patent should be extended, 
by reason of the patentee, without neglect or fault on his 
part, having failed to obtain, from the use and sale of his 
invention, a reasonable remuneration for the time, ingenu- 
ity, and expense bestowed upon the same, and the intro- 
duction thereof into use, it shall be the duty of said Com- 
missioners to renew and extend the patent, (fee. 

This provision for extension is not only confined to the 
patentee in terms, but shows most conclusively that the 
sole purpose of the extension is for his benefit. The pur- 



pose of the extension is precisely the same with that of the 
original grantof the exclusive privilege, to wit, remuneration 
to the inventor or discoverer. An assignee of the original 
right has no equitable claim to any extension of his privile- 
ges ; he has enjoyed v/hat he purchased ; has received all 
which he stipulated for, and no reason can be imagined why 
the legislative power should be exerted in his behalf. Nei- 
ther the letter of the statute, nor the motive which induced 
the provision, nor its equity, purpose, or policy, reaches him* 
He has no claim upon the public, no 'property in the inven- 
tion. He has no interest in the exclusive privilege except 
such as he has acquired by purchase, and when the terms 
of that purchase are satisfied there is an end of the matter. 
No reason can be assigned for any extension of the privi- 
lege so far as he is concerned, nor indeed for any extension 
under any circumstances, nor for any purpose, except that 
given by the act itself ; and this reason applies to none but 
the inventor himself. The sole condition upon which the 
extension is allowed is that the inventor has not been re- 
munerated. If this is found, the act proposes to give the 
remuneration. It pre-supposes the use and sale of the right 
under the original patent, — calls for an account of the pro- 
fits derived from such use and sale^ and enquires whether 
the proceeds are sufficient. If not, it proposes to make up 
the deficiency by an extension of the privilege. Who, then, 
is entitled to that deficiency ? The inventor clearly, and 
he only. 

Who shall render the accoimt ? Whose profits are sought 
for ? There is no provision for an enquiry into the profits 
of a purchaser of the right either in whole or in part. Such 
an enquiry is foreign to the purpose of the act. Suppose 
the inventor has sold his right and has received from such 
sale a sufiicient remuneration ; — then there can be no ex* 
tension — the assignee has no claims. Suppose the inventor 
has not been compensated, will you remedy the evil by be- 



10 

stowing additional privileges upon the assignee? The* 
thing is absurd. 

Again, suppose you find that the assignee has made sb 
fortune out of the invention, and the inventor has mad& 
nothing. Will you renew the patent at all ? Or if you do 
to whom will you give the benefit ? 

It is well to consider the equity of the thing. The value 
of the patent is the exclusive privilege^ and it is this which 
constitutes the subject of bargain and sale. A obtains a 
patent and sells to B the privilege for the State of Maryland 
for the term of fourteen years. B, if he purchase the ex- 
elusive right,, does so as may be well presumed, for the 
purpose of selling and communicating it to others. He 
does so until his term expires. Has he not received all to 
which he is entitled and all for which he stipulated ? No 
right to obtain an extension is transferred to him, or can 
under the law be transferred. The most express and em- 
phatic terms would not produce that result. But the in- 
ventor may under circumstances have that extension, and 
if he obtain it, what claim has the assignee, whose pur- 
chase has thus been satisfied, have to its benefits !■ 

The intent of the legislature, as apparent upon this 18th 
Section, until we come to the clause which has caused so 
much doubt and difficulty, is in my judgment too clear to 
admit of doubt or require discussion. The attempt to en- 
graft upon its provisions thus far, by any rule of construc- 
tion, any reservation for the benefit of assignees would be 
regarded as an absurdity. What meaning are we then to 
give to this clause inserted for the benefit of assignees ? 

To this question I answer in the outset not such a one 
as will render the principal provision of this section nuga- 
tory ; — nor such as conflicts with its principle and defeats 
its purpose. This clause was introduced to qualify not to 
defeat the main provision. 

If we adopt the first construction which I have mention- 
ed, which is that the assignees take upon the extension 



11 

^all the interest in the extended patent which he held in the 
■old one, we adopt a construction which may, and in many 
cases will, render the provision for an extension of no ef- 
fect. — Suppose the Patentee to have sold his entire right for 
an inconsiderable consideration. He applies for an exten- 
sion, — the commissioners are required to examine his ac- 
count of profits arising from the sale, they find those pro- 
fits inadequate and determine that the patentee is entitled 
■to further remuneration. But, they are powerless; the 
benefit of an extension goes not to the patentee, but his as- 
■signee. But the extension was never intended for the 
■benefit of the latter. So palpable is this result, that those 
who adopt this construction are driven to the conclusion 
that, in such a case, no extension can be granted under the 
act. But suppose the patentee have sold his privilege in 
part, the result is not so glaring, yet the principle is the 
same. In either case the construction given to a qualify- 
ing clause defeats the act in one case absolutely and totally, 
and in the other pro tanto. Upon what principle is it that 
^n assignee of the whole right can take no benefit of an ex- 
tension, (for in his case upon this construction it cannot be 
granted) and yet an assignee of a part may be benefited 
to the extent of his original share of the rights : what dis- 
tinction can be made in equity between the tvvo, and what 
difference is there in the relations subsisting between each 
and the patentee ? 

In one case the assignee of a part may derive an acciden- 
tal advantage from the interest still remaining in the paten- 
tee, but there is no better reason why the assignee in part 
should share in the benefit than there is that the assignee 
of the whole should take the whole. To make such a 
distinction is inconsistent with the acknowledged fact that 
the assignee has no equitable claim to an extension of his 
privilege, and equally so with the obvious truth, that the 
inventor, and he alone, had. I cannot accede to a con- 
•stmction which conflicts so palpably with the obvious 



12 

spirit and object of the act^ and. at the same time, throws 
over its provisions such a cast of inconsistency and absur- 
dity. It makes the statute /e/o de se, and imputes to the Le- 
gislature, either a design to defeat their own purpose, or an 
ignorance of the proper legal effect of their own phraseolo- 
gy ; for I cannot suppose their interest to have been to 
give to the patentee a contingent and minor benefit, and to 
eonfer the primary and principal advantages upon others. 

There is a construction which avoids these consequences, 
and that is the one which considers the term " interest 
therein" to have reference to an equitable right or interest 
in the extended patent, created by the act of the patentee. 
Those who adopt the construction first mentioned regard 
the interest in the new privilege as created by the statute 
alone, while others regard the statute as merely recogni- 
zing the interest derived by contract from the original 
proprietor. Under this last interpretation the whole bene- 
fit of the extension is secured to the inventor or discover- 
er, except so far as he may have voluntarily parted with 
it. and even when he has done so, he is supposed to have 
received a satisfactory consideration. 

The section in question will certainly bear this construc- 
tion. Every patent granted under the act of July, 1836^ 
carries with it a contingent right of extension — contingent 
only as to the remuneration it may afford to the inventor ; 
but absolute where this object fails. This right of extension 
is an important element in the privilege. It is certainly 
competent for the patentee to separate this from the exclu- 
sive right conferred absolutely by the patent — to retain or 
part with it. This right, however, is not strictly speaking 
assignable, because it is but a contingent one, and allowed 
by the statute onli/ to the patentee. In other words, an 
assignment would not enable the assignee to obtain it upon 
his own application or in his own name. All antecedent 
contracts in relation to it must therefore be of necessity ex- 
ecutory. Bearing this in mind, let us advert to the 11th 



13 

Section of the Act. This section authorizes an assignment 
of the patent, either in whole or in part, and also a grant 
or conveyance of the right to make and use, and to confer 
upon others the right to make and use, the thing patented 
throughout any particular territory of the United States. 

Now it is apparent that in all cases of assignment, &c. of 
patents granted under this law, reference would be had to 
the probability of an extension ; and the duration of the 
right granted would be the subject of stipulation and con- 
tract as much as any other ingredient or measure of the in- 
terest conveyed. If, under these circumstances, the pur- 
chaser chose to take an interest in the original patent with- 
out a stipulation in respect to an extension, the intent of 
the parties could not be misapprehended, and I see no 
reason for an arbitrary" interposition of the statute to change 
the import and eifect of the contract, and to give to the 
thing conveyed a greater value and extent than the parties 
designed. If a right in the extended patent is stipulated 
for, then there is an ' interest ' to which the clause in the 
18th Section can attach, and, if we consider this the interest 
contemplated by that clause, there is no incongruity in the 
statute. 

The 13th Section, providing for the issuing of a cor- 
rected patent in certain cases, also recognizes the right of 
assignees. There is an obvious reason for this Avhich need 
not be explained. The 18th Section however furnishes on 
its face a very satisfactory explanation why the privilege 
of an extension is not given to an assignee. Yet if we 
adopt the construction for which some contend, we at once 
obliterate the distinction which stands out so prominent 
upon the statute. And we either give to the assignee the 
whole benefit of the extension, or we withhold it altogether. 
It is to be observed that the 11th Section speaks of an as- 
signment of ^^ the ivhole interest." Now if the legislature 
intended, by the word interest in the 18th Section, to em- 
brace such an assignment, they have evidently'- defeated 



14 

their main purpose. And the whole section, when we 
come to compare its several provisions for an extension 
with the clause for the benefit of assignees, — the reason 
given with the eifect produced, exhibits a piece of legisla- 
tive absurdity which ought not to be attributed to the Con- 
gress of the United States. 

I cannot so construe their language. I believe they had 
reference to an equitable interest in the extension, and I 
am forced to carry the word HhereirC back to the word re- 
newal as its antecedent. This removes all the difficulty 
which I have mentioned. 

I have another reason for adopting this construction, to 
wit, that the benefit of the extension is not extended to all 
interested in the original term of the patent, but to those 
only who have an equitable interest in the extended term. 
And that reason is, that I cannot conceive it to have been 
the design of the Legislature to change or alter the con- 
tracts of parties, nor to transfer the rights and privileges of 
one man without his concurrence and assent to another. 
The privilege of the extension is given by the statute to 
the inventor, and for considerations appertaining to him 
alone; yet the construction contended for would, at the 
instant it was conferred, transfer it to his assignee without 
his assent. I believe the design of Congress was not to do 
violence to the interest of the parties, but to give effect to 
their contracts as they understood them, and to secure to 
each what he is entitled to by a liberal, fair and equitable 
construction. 

The intent of the parties I insist is to be the guide in 
the application of this clause of the statute. Suppose A. 
obtains a patent under this law with the right of extension 
— he sells to B. an interest to endure until the expiration 
of the fourteen years, making no stipulation for a longer 
period. — A. afterwards obtains an extension — Now to give 
the benefit of that re-extension to B. in supererogation of 
his contract, by a mere arbitrary act, is in my judgment 



15 

not only unjust in itself but incompatible with the funda- 
mental principles of Legislation. But if it be expressed 
in the contract, or is by just legal construction inferable 
from it, that B. shall be interested in the extension, that 
a case is found for the application of the clause in ques- 
tion, and one for which it was intended. 

No injustice is wrought by this construction. The pur- 
chaser of any interest in a patent, be it greater or less, 
knows not only what he purchases, but he knows also 
that the patent may be extended. If he choose to limit 
his purchase to the original term he can do so, and if he 
do not guard himself against the contingency of an ex- 
tension, it is an omission, the consequences of which must 
necessarily fall upon himself. If his case be a hard one, 
it furnishes no reason why he should invade the privi- 
leges or appropriate the property of another. 

In short if we have regard to the several provisions of 
the act of July 4, 1836, their obvious import and effect 
upon interests originating under that act, I can see no pro- 
priety or necessity for any saving or extension of the 
rights of purchasers beyond the terms of the contracts by 
which they were acquired. All the arguments adduced 
to prove the equity or propriety of such an extension, are 
drawn from the consideration of purchases made before 
the provision for extension existed, and are based upon 
the assumption that the purchase was made in the expec- 
tation, on both sides, that the exclusive privilege would 
cease with the expiration of the first term, and thus the 
right acquired to make, vend, and use the thing patented 
would be perpetual. 

In my opinion Congress did not intend to vary the con- 
tracts of the parties, neither to enlarge nor diminish, 
neither to give on the one hand what was not stipulated 
for nor to cut short any reasonable expectation on the other. 
The assumption that both parties understood that the ex- 
clusive right for the whole period was transferred and that 



16 

at the expiration of 14 years the assignee would have the 
right to use the invention without interruption is not al- 
ways well founded and the argument built upon it is fal- 
lacious ; it would prove too much, it would confer the 
benefit of the extension upon an assignee who had bought 
the exclusive privilege for the mere purpose of selling 
again, an extension in my judgment in which there is 
neither equity nor reason. 

I will now proceed to notice some of the objections to 
this construction. 

And first it is objected that it renders the clause nuga- 
tory. I do not so regard it, Congress had already provi- 
ded for assignments, grants, &c., and for an extension of 
the patent. The way was thus prepared for the acquisi- 
tion of an interest in the extension by anticipation, and 
they must have contemplated such a case. 1 have already 
suofgested that doubts might exist, whether a stipulation 
for such an interest could be regarded as any thing more 
than an executory contract, and whether the assignment 
and record of the same required by the 1 ] th Section, must 
not be renewed, in order to enable the assignee to sue in 
his own name. The clause in question was proper, if 
not necessary, to remove these doubts. By this recogni- 
tion of the equitable interest the party is enabled to avail 
himself of the provisions of the statute for the security 
and enforcement of his rights. 

The provisions may be after all unnecessary, as the 
same result might be produced without the clause as with 
it upon the construction which I give it. If so, it is no 
new case. There are very many statutory provisions which 
merely express what without these would be a just legal 
inference or consequence from previous provisions. There is 
an instance of it in this very act, in the 13th Section, which 
provides for a correction of the patent, and gives express- 
ly to administrators and assignees what they would un- 
questionably be entitled to without being named. Were 



17 

we to expunge from the statute book every thing wliich 
in strictness could be deemed unnecessary, we should 
purge it of an immense amount of verbiage. And I am 
not aware of any rule of construction which requires of 
us to wrest the meaning of a passage, in order to avoid 
this objection. 

It could never be supposed that the intent of this clause 
was to protect the rights of the assignees, &c. in the 
original term. Its purport is prospective, either to create 
or protect an interest in the extension, and whether it.con- 
templates an existing interest to which it might attach, or 
one created by itself propria vigor e, is the question. 

It is also said, that by the construction adopted the as- 
signee, &c. derives no benefit from the extension. I know 
not what benefit he can claim, except to be protected in 
rights already acquired. If he choose to acquire an interest 
in the original patent, without stipulating for one in the 
extended term, I see no reason why the law should give it 
to him. Having satisfied myself that the first construction 
stated at the commencement of this opinion, is not the true 
one and cannot be adopted without defeating or at least 
impairing the great object of this part of the Act, nor con- 
sistently with its reason and spirit, I proceed to consider 
the third or last construction insisted upon. 

The statute extends the benefit of the renewal to " as- 
signees and grantees of the right to use the thing patented, 
to the extent of their respective interests therein." In criti- 
cising this phraseology, it becomes necessary to ascertain 
the antecedent to the word ' therein.'' This must be either 
the " right to use" or the "renewal." To apply it to the 
" thing patented" would make the expression unmeaning. 
If it be the ' right to iise,^ then the question arises what is 
meant by these words. In their most general import they 
are synonymous with the patent right. If we so under- 
stand them then there is no ground for this third construc- 
tion and we are thrown back upon the two others. 

3 



18 

There are plausible reasons however for considering the 
expression as used in a more limited sense, and as mean- 
ing the right to use the tiling 'patented^ in contradistinction 
to the exch^sive right, — the right to mal^e and vend, and 
the right to license others to make and vend or use. The 
11th Section, in providing for assignments, makes this dis- 
tinction. It specifies an assignment in whole or in part, a 
grant or conveyance of the exclusive right to make and 
use, and '■ to grant to others to make and use the thing 
'patented^ within a given territory. This enumeration 
embraces all the component parts of the privilege, except 
the mere right to use the thing patented or the patented 
fnachine, which is the smallest interest which can be had 
in the patent. That this section intends this distinction is 
apparent from the provision for recording these convey- 
ances, without involving the absurdity ot requiring the 
purchaser of a single machine to place on record in the 
Patent office the evidence of his right to use it. 

The clause in the 18th Section speaks of the right to 
use the thing patented. This expression " thing patent- 
ed^' in the 11th Section would be, in its application to this 
case, synonymous with " the patented machitie,''^ and if it 
have the same import in the 18th Section, is there syno- 
nymous with patented machine. If this be so, then this 
clause enures only to the benefit of those who, previous to 
the expiration of the first term, have acquired the simple 
and naked right to use, and would have no reference to 
any assignment of the exclusive privilege. For example 
a man purchases a patent plough or a planing machine 
from the patentee or his assignee, such sale implies a li- 
cense to use the thing, but the purchaser would have no 
interest in the exclusive privilege. If then we make this 
distinction, the provision in question is limited to a very 
narrow operation. I am of opinion that an assignee of an 
exclusive privilege could not, after the expiration of his 
term, convert his interest into a mere license to use the 



19 

thing pateyitfd. After all. the right to the continual use 
of the machine in the case I put would arise, in my judg- 
ment, rather from the presumed intention of the parties 
than from the positive provision of the clause in question. 
The sale of a portion of the exclusive privilege with the 
power of conferring it upon others, is a very different 
thing from the license to use implied in a sale of the pa- 
tented machine. In one case the interest conveyed would 
be understood by the parties as limited to the specified 
term of the patent, and in the other rather to the duration 
of the machine, or if you please to no definite period. In 
the latter case I should find no great difficulty in consid- 
ering the license as surviving an extension of the patent. 
If so and such is the fair inference from the contract, then 
the same result would follow from the clause, whether we 
adopt the construction which I am disposed to adopt or the 
one which I am now considering ; for in this view of the 
subject, the right of the purchaser is derived from the act 
of the patentee, and is an interest in the extension to be 
recognized and protected by the statute. 

But there are difficulties in the way of this construction 
apparent on the face of the statute. The term assignee 
cannot with legal propriety be applied to this limited right ; 
a mere license to use is not in any sense an assignment, 
and the statute throughout applies the term to a convey- 
ance of the whole or a part of the exclusive privilege. 
Again : the expression "to the extent of their respective in- 
terests ? therein" is hardly applicable to a mere license to 
use. When so applied it is hardl)'- intelligible to me. In 
short if the Legislature intended to limit the clause to this 
qualified right, I think they would have adopted language 
altogether different and more appropriate. 

Upon the whole I am disposed to regret this construc- 
tion: In the first place, because I am not driven to it by 
the letter of the statute. 

And secondly, because the equity of the matter leads 



20 

me to the same conclusion. The great argument in favor 
of the construction which gives to the assignee, (fcc, the 
same interest in the extended which he held in the origi- 
nal term, is, that by a diiferent construction, the purchaser 
of an interest in a patent is cut short in the enjoyment of 
his purchase, and restricted in the use of a privilege which 
he had reasonably supposed he had acquired. Whether 
you apply this argument to a more or less extensive privi- 
lege, its legitimate tendency and effect is the same. Now 
this argument is met by a construction which gives the 
purchaser all the interest in the extended term which he 
is entitled to by the terms of his contract, or which he had 
reason to expect upon a liberal and fair inference of it, 
with a view to the intent of the parties. If he procure a 
license to use which he can rationally understand is to 
extend beyond the expiration of the original term, it is not 
necessary to resort to arbitrary legislative power to protect 
him, but the construction, which protects all interests in 
the extended term derived from the patentee, is enough for 
his purpose. 

Upon the whole, if we take this Act and compare its 
several provisions with each other, regarding them as pre- 
senting a system of legislative regulation on the subject, 
look at the obvious reasons and objects of its several provi- 
sions with reference to its prospective operation upon cases 
arising under it, I know not of a single criterion of con- 
struction, if the words of the clause are equivocal, which 
would not lead to the conclusion that the benefit of the ex- 
tension enures to assignees, &c., so far only as they have 
an interest, either legal or equitable, in the extended term, 
derived by contract from the patentee. And I see none 
which would warrant the conclusion, that an interest in 
the original term, is, by force of legislative enactment alone, 
extended to the renewed patent. The main argument for 
a different conclusion is that the purchaser, having acquired 
a right which he supposes must endure until the exclusive 



21 

privilege ceases, is deprived of its benefits by the interposi- 
tion of an extended patent, and thus that injustice is done 
him. But if one supposes his purchase to have been made 
after the right of extension provided for, the argument loses 
its force. If he purchases knowing that an extension may- 
be obtained, it rests with himself to guard ao^ainst the con- 
tingency. 

The difficulty, I believe, has arisen from the application 
of the statute, in the first instance, to a past transaction, and 
from the apparent injustice which may be done to one who, 
having purchased before the law of 1836 was enacted, may 
be supposed to have done so under a belief that the mo- 
nopoly would cease with the original term, and that there- 
after the invention would be free to all. 

This brings us to consider the effect of the clause in 
question upon rights acquired before the 4th of July, 1836. 
This I call an incidental operation and effect, because I 
assume that the attention of the legislature was directed 
principally, if not exclusively, to the future operation of the 
system about to be established, and its effect upon past 
transactions, if regarded at all, must have been regarded as 
temporary and incidental. 

That the intent of the legislature is to be gathered from 
the prospective provisions of the act, is to me clear ; and if 
that intent be not doubtful, I know of no authority for de- 
parting from it. We may construe an act so as to avoid 
injustice in a past use, if we can do so consistently with the 
intent and object of the act ; but we are not at liberty to do 
so, when the effect would be to give the act an operation, 
for all time to come, different from that intended, nor when 
we defeat any of its obvious purposes. Admitting, for the 
sake of argument, that injustice is done by the construction 
which 1 adopt, in respect to rights acquired before the pas- 
sage of the act, the case stands thus : One of the principal 
objects of the act was to give to a patentee a right of exten- 
sion, and this for his benefit alone. The assignee, it is 



22 

admitted on all hands, has no claim for a benefit of the 
kind ; the patentee has. It is clearly the intent of the act 
to give it to him alone, and were it not for the supposed 
injustice to which I allude, I think no question would have 
arisen on the point. INovv to give the benefit in whole or 
in part to the assignee is inconsistent with the design of 
the act. But if we confine that benefit exclusively to the 
patentee in all cases, we do injustice in a few cases where 
an extension was not contemplated, and of course not 
guarded against. Now we can remedy that injustice, but 
in doing so we shall do greater injustice to those who were 
the especial objects of the provision. And we give the act 
an operation, for all future time, difierent from that which 
was obviously the intent of the legislative power. In this 
dilemma, the partial and temporary injustice must, in my 
judgment, be submitted to. We cannot pervert the law 
by forced constructions for the sake of a particular case. 

After all, the supposed injustice has, in my opinion, been 
much overrated. If we take a practical view of the sub- 
ject, we shall find that, in many cases, it does not arise at 
all. Assignments of patent rights are generally made, in 
the first instance, to those who buy the exclusive privilege 
as a matter of traffic and speculation, — with a view to sell 
again. In such case, if no more is stipulated for than an 
interest in the first term, when that has expired all is re- 
ceived which was expected,— the assignee has the benefit 
of selling during his term. If by means of an extension 
the privilege of the patentee is increased, I can conceive of 
no possible ground, legal or equitable, upon which the as- 
signee can claim it. It is no part of his purchase, and his 
purchase is not made less valuable by the extension. li 
he purchased under the expectation that at the end of the 
first term the invention would become free, and his traffic 
cease, still he is no worse oif by the sinecure. Now in his 
case, instead of straining a point to give him the benefit of 
an extension, I would avoid it as unjust to the patentee. 



23 

This disposes of all who take an assignment of the 
right, either in whole, of a fractional part, or for a particu- 
lar territory. The next class consists of those who buy 
the right to make and vend the thing patented : so far 
as this class make investments in the manufacture, a hard- 
ship may occur. The third and only remaining class are 
those who acquire the mere right to use the thing patent- 
ed ; and, with respect to these, I think a fair construc- 
tion of their contract would save them from injustice. — 
This right to use merely, is often, perhaps generally, ac- 
quired by purchasing the machine patented, the sale of 
which implies a license to use;— and such a license 
would not, in my opinion, be determined by an extension, 
even without the clause in question. But this is not all. — 
The class of cases in which the supposed injustice occurs 
must in a very few years be extinct. In about five years 
all patents granted before the right of extension was given 
by a general law will have expired, and all rights deduced 
from patentees by assignment or grant will have been ac- 
quired with knowledge of the right of extension. This 
consideration has great weight with me. If a regard to 
this partial and temporary injustice controls the construc- 
tion of the statute, what shall be done when the injustice 
ceases to arise? Shall a construction of the statute, forced 
upon it by extraneous considerations and inconsistent 
with its spirit and purpose be persisted in, or will the act 
when that period shall arrive have a different meaning ? 
For my own part, I would rather give to it in the outset a 
salutary and proper operation while it lasts, even at the 
expense of a temporary evil. 

There is still another consideration connected with this 
branch of the subject which ought not in my judgment to 
be overlooked. Although there was prior to the 4th of 
July 1836, no general law providing for extensions, yet 
Congress have, in repeated instances, for a period of nearly 
forty years past, exercised the power of granting an exten- 
sion of a patent, by special and private acts. There is not 
a patent now in existence, which was not taken out since 
this practice commenced, por are these rights dependent 
upon patents which have not been acquired under like cir- 
cumstances. The result is, that whoever may now have 
an interest to be affected by the construction of the present 
act, he must be supposed to have had reference at the time 
of his purchase to this power of extension, and might, if he 
had thought proper, have guarded himself against it. 

Upon the whole, although there are difficulties in the 
way of every construction of this clause which has been 



24 

suggested, yet I think the more rational one, and that 
which conforms best to the intent and purpose of the act, 
is the one which I have adopted. It is that a purchaser of 
an interest in the original patent does not of course become 
entitled, upon an extension and by mere force of the statute, 
to the same interest in the extended patent ; — but that the 
clause in favor of assignees, &c. attaches to those cases 
only where it appears, either from the express terms of the 
contract or fair inference from it, to have been the intent 
and understanding of the parties that the purchaser should 
enjoy the benefit of the extension. And I am of opinion 
further, that where the license to use is implied in the sale 
of the patented machine, as in the case of a patent plough 
and the like, such license would not be determined by an 
extension, because such could not be the supposed intent 
of the parties. 

Reference has been had in the discussions on this sub- 
ject to the several and special acts granting extensions, 
which have been from time to time, enacted by Congress. 
I do not see that we can desire any aid from that source 
in determining the true construction of the Act of 1836. 
The provisions of those special acts are various, and were 
evidently adopted with a view to the particular circum- 
stances of each case. 

In the case of Oliver Evans, there was a proviso that 
those who had purchased the right to use the elevator 
should not be compelled to purchase anew. In the case 
of Amos Whittemore, the patent for manufacturing cards 
was extended unconditionally. In thecaseofO. Evans, the 
patent for the steam engine was extended with a simple 
proviso, that he should charge no more for the use of his 
invention than he had previously done. In three cases 
which follow, viz: James Parker, John Adamson and 
Samuel Browney, no restriction was imposed. In that 
of Jethro Wood for a plough there was a proviso extend- 
ing the right of all purchasers as fully as they held it 
under the original patent. The same proviso was made 
in the case of Thomas Blanchard. In the case of Robert 
Eastman, no proviso was inserted, and in that of James 
Barrow, which was the last previous to the passage of the 
general law, there was the same proviso as in Wood's and 
Blanchard's case. From this review of the case it is evi- 
dent that no uniform practice has obtained, and, of course, 
no inference as to the intent of Congress can be drawn 
from them. 

SAMUEL PHELPS. 



ARTS AND SCIENCES. 



u..r^^ 



The eighth Sub-Division of Section eight of the Consti- 
tution of the United States, Provides for authors and in- 
ventors :— 

The Congress shall have power — ^ 

" To promote the progress of science and useful arts by 
securing- for limited times to authors and inventors the ex- 
elusive right to their respective writings and discoveries.'' 

Under the above sub-division of Section eighth of the 
Constitution of the United States, Congress passed an Act 
on the 3d February, 1831, securing to the author, his exe. 
cutors, administrators or legal assigns, the sole right and 
liberty of printing, reprinting, publishing and vending in 
whole or in part, his production for the term of twenty- 
eight years from the time of recording the title. 

At the expiration of said term of twenty-eight years, if 
such author be dead, and shall have left a widow, child or 
children, the copy-right shall ensure to them for the exten- 
ded term. — See Laws United States, 1831. 

By the provisions of the copy-right Law it will be per- 
ceived that no provision is made for assignees. The in- 
tention of Congress was to encourage the arts and sciences, 
and to protect authors, designers, etchers, engravers, &,c. 

Mr. Justice Story in his commentaries on the Consti- 
tution of the United States, book 3, page 402, in speaking 
of this provision, says : 

" The power in its terms is confined to authors and in- 
ventors for limited times. The above power did not exist 
under the confederation, and its utility does not seem to 
have been questioned. These rights seem to have been 
decided before the revolution in Great Britain, to be a 
common law right." 

Is not the right of an invention as much the property of 



the inventor and to be secured to him with as much com- 
mon law right as the landed estate is to its owner 1 If a 
man sold out his land for ten years only, could Congress 
make a law that would be binding, compelling the grantor 
to yield his entire interest in the land without considera- 
tion and only on the ground of hardship ? 

Would not the assignee of an author's work with his 
stereotype plates and other property on hand connected 
with the work suffer the same hardship that an assignee 
would under an invention with a patented machine on 
hand. 

The fifth section of the patent act of 1836, grants to the 
inventor, his heirs, administrators, executors or assigns, for 
a term not exceeding fourteen years, the full and exclusive 
right and liberty of making, using, and vending to others 
to be used, the said invention. 

The eighteenth section is evidently a continuation of 
the fifth section, making the extension for the same pur- 
pose as is provided by the fifth section, giving to the in- 
ventor the exclusive property in a second term, declaring 
that the second term shall have the same effect in law as 
though it had been originally granted for the term of twen- 
ty-one years. The eighteenth section declares also in 
plain terms, that if the inventor has sold out his patent, 
and without fault on his part did not receive a reasonable 
remuneration, thereupon it shall be the duty of the commis- 
sionsrs to grant him a second term. 

Now if the inventor had sold his patent to an assignee 
for seven years, and the assignee had erected machinery, 
could he have claimed the balance of the fourteen years 
unexpired with any more just reason than he can claim 
this new grant without any consideration or covenants car- 
rying him into the prospective interests of the patentee ? 

Suppose a patentee of a peculiar kind of paint should 
sell his patent to a paint manufacturer. The assignee 
adds no new machinery to his establishment ; the whole 



discoveryis in the mixture. The assignee makes afortune by 
the invention, he cannot set up any hardship : and does the 
18th Section intend to ^ive the assignee the power to sac- 
rifice the inventor and make him a mere trustee for his as- 
signee (under the first term of his patent) or does it intend 
to give him the benefit to the extent of his interest in the 
said extension ? 

Suppose the section read thus, would there be any doubt 
as to its meaning and can any other construction be put 
upon it giving the inventor his equitable interest therein : 

" And the benefit of the renewal or extension shall ex- 
tend to assignees and grantees, of the right to use the 
thing patented to the extent of their respective interests 
in said extension." 

Nine patents out of ten are sold out by inventors to 
men who do not expend any money in machinery or in 
putting the invention into practice. They merely buy to 
sell again ; and to give them the second term would be a 
hardship upon the inventor. 

Wood WORTH sold out the State of Maryland for the 
first term of his patent. It was obtained from him through 
fraud and without consideration. The Administrator gave 
notice to the holders of the right some six months before 
the patent was extended that they must not expect to hold 
under the extension : seventeen days before the extension 
took effect, two of the firm sold out a half interest in said pa- 
tent to an individual for the sum of five dollars, and on an 
application for an injunction to restrain him from the use 
of the machine, the court held that it would be a hardship 
on the assignee if he should be stopped in the use of his 
machine, yet the assignee had refused to pay any fair con- 
sideration but claimed the extension for the State of Mary- 
land, by force of the 18th Section of the Patent. Law. — 
The hardship may be stated thus. WooDwoft'iora got 
nothing for the first term, while one of the assignees of the 
State of Maryland told the administrator that he had clear- 



ed in a single year thirty- one thousand dollars by his pla- 
ning establishment in Baltimore. The administrator 
could have sold out the extended term for the State of 
Maryland for the sum of fifteen thousand dollars if the 
law granting to him the extension had been so clear 
as to have removed all doubts as to his right therein. — 
The whole value of the machinery held by the assignee 
that is covered by the patent in the State of Maryland 
as aforesaid would not exceed in value over one thousand 
dollars and might be sold by them to others having lawful 
rights in the patent for their full value, so that no actual 
loss would occur to the assignee by reason of his hold- 
ing the patented machine. Yet he must be protected in 
his monopoly according to the decision of the Court, and 
the inventor sacrificed to the extent of fifteen thousand 
dollars- 
Suppose WooDwoRTH had sold out his patent for the 
State of Maryland, at the sum of five thousand dollars per 
annum, for the unexpired term of the patent, would his 
assignee by the 18th Section take the extended term with- 
out consideration, or would the inventor have the right to 
the benefit of the extension, as he had under the first term, 
and if the assignee declined to use the invention any long- 
er, or exercise any ownership over it, could the inventor 
enforce the payment beyond the first term of the patent ? 

It has been suggested that Congress ought to protect as- 
signees in the use of specific machines erected and up 
for use at the expiration of the patent. 

Now suppose the patent to be extended a few months 
before the end of the first term. The assignee of the right 
for the District of Columbia, should fill the District be- 
tween the time of the order of extension and its taking ef- 
fect with as many machines as possibly could be sold or 
used in the District. What benefit could the patentee 
have of the extension under such a law ? 



EXTENDED PATENTS. 

The Patents hereafter named have been extended beyond 
the term of fourteen years by special acts of Congress, to 
wit : 

1st. The patent granted to Oliver Evans for his " In- 
vention, discovery, and improvement in the art of manu- 
facturing flour and meal," (fee, dated on the 18th of Decem- 
ber, 1790, was extended by an act approved January 21st, 
1808. The extension was from January 26th, 1808 ; three 
years and eleven months after the invention had become 
public property by the expiration of the first letters patent. 
The act therefore protected those who had received a li- 
cense or grant from the patentee during the term of the first 
patent, and hence there is a special provision for licenses 
under the first term. Those who built machines after the 
patent had expired and before the second or extended pa- 
tent, were not protected in the use of their machines. See 
vol. 4, U. S. Laws, page 135. 

2. The patent granted to Amos Whittemore, June 5th, 
1797, for manufacturing cotton and wool cards, extended 
for fourteen years from the expiration of the first term, to 
Amos Whittemore and William Whittemore, Jun., by an 
act approved March 3, 1809, to take efiect from the 5th day 
of June, 1811. In this act there is no restriction of, or 
protection extended to, those who had erected machinery 
during the first term, nor are the rights of assignees under 
the first term extended to the second. This was one of 
the most meritorious and valuable inventions connected 
with manufactures, ever made in this or any other country. 
See vol. 4, page 224, Laws U. S. 

3. The patent granted to Oliver Evans, 14th February, 
1804, for his improvement in steam engines, was extended 
for seven years, by an act approved February 7th, 1815, 
and before the expiration of the first terni. The only re- 



6 

strictiou in this act prohibits the patentee from recovering 
more lor the use of his invention under the extended term 
than was paid by assignees under the first term. The 
rights of assignees under the first term are not protected 
under the second or extended term. See vol. 4, page 792, 
Laws U. S. 

4. The patent granted to iSamuel Parker, for improve- 
ments in currying leather, on the 9th of July, 1809, ex- 
tended for fourteen years by an act approved March 3d, 
1821, and therefore before the expiration of the first term. 
In this act there is no restriction on the patentee and no 
extension of the rights of assignees, &c. See vol. 6, page 
589, Laws U. S. 

5. The patent granted to John Adamson, for a Floating 
Dry Dock, on the 13th of December, 1816, extended for 
fourteen years by an act approved March 2d, 1831, nearly 
one year after the expiration of the first term, without re- 
striction, and no extension of the rights of assignees. See 
vol. 8, page 466, Laws U. S. 

6. The patent granted to Samuel Browning for separa- 
ting Iron Ore by magnets, on the 25th of November, 1814, 
extended for fourteen years by an act approved March 3d, 
1831, nearly three years after the expiration of the first 
term — no restrictions, and the riglits of assignees not ex- 
tended. See vol. 8, page 497, Laws U. S. 

7. The patent granted to Jethro Wood for improvements 
in the Plough, on the 1st of September, 1819, extended for 
fourteen years by act approved May 19th, 1832. By this 
act all rights acquired under the first term are extended to 
the second, and the patentee is restricted not to charge for 
the use of his mvention under the extended term more 
than he received under the first term. See vol. 8, page 
555, ib. 

8. The patent granted to Thomas Blanchard for Turn- 
ing Gun Stocks and other irregular forms, January 20th, 
1820, was extended for fourteen years by act approved 



June 30lh, 1834, after the Patent had expired. This act 
contains the same restriction as the act for the extension of 
Oliver Evans' patent for manufacturing flour. The gov- 
ernment had purchased licenses to use this invention in 
the armories during the term of the first patent, and was 
benefitted by the restriction. See vol. 9, ib. 

9. The patent granted to Robert Eastman and Josiah 
Jaqueth, for a machine for Sawing Clapboards, on the 16th 
of March, 1820, extended for seven years by act approved 
March 3, 1835, and therefore after the patent had expired. 
The riofhts of assio^nees are not extended bv this act. See 
vol. 9, page 273, ib. 

10, 11. Two patents granted to Com. James Barron, one 
for Cutting Corks, on the 13th ot January, 1819. and the 
other February 20th, 1819, extended for fourteen years by 
act approved July 2d, 1836, after the patent expired. The 
rights of assignees extended, and the rights of the public 
protected, as in the act for the extension of Thomas Blan- 
chard's patent. See vol. 9, page 529, ib. This act pre- 
sents a very striking case ; it was drafted by the same com- 
mittee that drafted the 18th Section of the act of 1 836, and 
the two acts were passed not only by the same Congress, 
but within two days of each other ; on the 2d the exten- 
sion to Com. Barron, and the Patent Law on the 4th of 
July, 1836. The United States government were using 
the machines of Com. Barron, as well as the machines in- 
vented by Thomas Blanchard, in their several establish- 
ments, and in the extension of the patents Congress re- 
served the right to use on behalf of the United States. If 
therefore it was the intention of the Legislature to give the 
same limitation to the 18th Section of the act of July 4th 
as to the act of July 2d, extending James Barron's patent, 
is it not reasonable to suppose that the same or nearly the 
same language would have been used ? This cannot be 
questioned. But such could not have been the intention, 
for the circumstances were different. Com. Barron's pa- 



8 

tents had expired, and his inventions had become public 
property ; and the act of July 2d is for the grant of new 
patents for inventions which were then public property; 
the act therefore could not take from individuals what they 
had acquired by the expiration of the letters patent. The 
18th Section of the act of July 4lh, 1836, provides for the 
extension of patents beyond the first term, but before their 
expiration, and which therefore does not take away vested 
rights. 

There is one important circumstance connected with 
these several special acts mentioned, to wit : all those which 
have a restricting clause were either enacted after the ex- 
piration of the first term of the patents, and after they had 
become public property, or as in the case of Jethro Wood 
and Oliver Evans, the profits arising from the extension 
without limitation, would have been enormous, and also 
would have produced distress to a great extent in the com- 
munity. 

12. The patent granted to William Woodworth on the 
27th of December, 1828, for a machine for Planing, 
Tonguing, and Grooving Boards, Plank, and other mate- 
rials. Extended on the 16th day of November, 1842, by 
the board of Commissioners, upon the application of Wil- 
liam W. Woodworth, as administrator of William Wood- 
worth deceased, for the term of seven years ; and previous 
to the expiration of the original patent, to take efiect from 
the 27th day of December, 1842, for the term of seven 
years, re-extended by act of Congress, passed on the 25th 
day of February, 1845, to take effect after the 27th day of 
December, 1849 ; without restriction to the administrators. 

From the foregoing statement it will be seen that twelve 
patents have been extended by Congress. By reference to 
the memorial of William W. Woodworth, herewith printed, 
it will be perceived what must have been the intention of 
Congress in re-extending the patent of William Woodworth. 



MEMORIAL. 

The following memorial of William W. Woodworth, 
was presented to the Senate and House of Representatives 
of the United States, at the recent Session of the twenty- 
eighth Congress, for the purposes therein contained, and 
was referred to the Committee on Patents and the Patent 
office. \ 



To the Honorable the Senate and House of Representa- 
tives of the United States of America in Congress 
assembled : 

The Memorial of William W. Woodworth, of Hyde 
Park, in the County of Dutchess in the State of New 
York, as he is the Administrator of the goods and Estate 
which were of William Woodworth, late of the City, 
County, and State of New York, deceased, respectfully 
shows, that on the twenty-seventh day of December in the 
year eighteen hundred and twenty eight. Letters Patent 
bearing that date were in due form of law granted to the 
said William Woodworth, for a new and useful machine 
invented by the said William Woodworth, the title where- 
of was an improvement in the method of planing, tongue- 
ing, grooving, and cutting into mouldings, or either, plank, 
boards or any other material ; and for reducing the same 
to an equal width and thickness ; and also for facing and 
dressing brick and cutting mouldings on, and facing me- 
tallic, mineral, or other substances : 

And your Memorialist further represents, that William 
Woodworth, while engaged in making his said invention 
and in perfecting the same so that it could be reduced to 
practical use was forced to make very considerable expen- 
ditures which he had not the means of making from his 
own resources and consequently was compelled to resort 
1 



for aid to James Strong, Esquire, then of Hudson in the 
State of New York, and to induce the said Strong to af- 
ford him the needed assistance he was obliged to assign 
to him one half of his right to the invention. After the 
Letters Patent had been obtained, the said Woodworth 
and Strong, found it necessary to incur very heavy expen- 
ses to bring their machine into public use : strong prejudice 
existed in the minds of Builders in the City of New York 
against the machine and its products, and at the same time 
those who derived their support from the hand labor which 
the machine was designed to save naturally felt a strong 
enmity against the inventor and desired to prevent the 
success of his plan. It was under these circumstances 
that Woodworth and Strong set up, at a very considera- 
ble expense, at the Dry Dock, in the City of New York, 
their first operative machine and m order to bring the ma- 
chine and its products into public notice expended large 
sums of money in purchasing floor planks and other ma- 
terials to be planed and sold to Builders. The result was 
that Woodworth and Strong became seriously embarrassed 
and were under the necessity of making sales of their ex- 
clusive rights to avoid ruin ; great efforts were made by 
them to effect sales in different places and they succeeded 
in making a contract for the sale of a right for the City and 
County of Philadelphia and some adjacent territory, upon 
advantageous terms, but before this contract had been ex- 
ecuted an advertisement appeared in the newspapers prin- 
ted in Philadelphia, setting forth that one Uri Emmons 
was the true inventor of the Planing Machine ; that he 
had obtained Letters Patent therefor, and warning all per- 
sons that they would be prosecuted if they should use any 
of these machines under Woodworth's Patent. This no- 
tice alarmed those with whom Woodworth and Strong- 
had contracted and they refused to execute the contract : 

The history of this Emmons' claim, as it has been de- 
veloped recently on several trials at law, is as follows : In 



the year 1824, Uri Emmons, who then lived at Syracuse, 
in the State of New York, was applied to by one Henry 
Giflford, who was engaged in executing a large contract for 
the building of vats intended for the evaporation of salt 
water, and enquired of whether he could make some kind 
of a machine to straiten and joint the edges of planks to 
be used for these vats. Emmons encouraged Gilford to 
think that he could make such a machine ; and Gilford 
having supplied hmi with funds for the purpose, Em- 
mons, constructed a machine, but on trial it was found use- 
less and was abandoned and taken to pieces. The ma- 
chine made by Emmons, was in some particulars like 
Woodworth's, but considered as an organized machine it 
was essentially different therefrom. After this machine at 
Syracuse had been thus abandoned, Emmons never built 
any other machine, nor reduced his ideas to any partisular 
form, nor applied for any Letters Patent until after the said 
Letters Patent were issued to Woodworth. In the course 
of the year 1829, Emmons was one day in the office of 
Thomas ap Thomas, Esquire, a Counsellor at Law, m the 
City of New York, and happened to hear there a conversa- 
tion between Mr. Thomas and three persons by the names 
of Twogood, Halsted and Tyack, who were consulting 
Mr. Thomas, about a difficulty between them and Wood- 
worth, arising out of negociations which they had had 
with Woodworth, respecting the purchase of some right 
under his patent. Alter Twogood, Halsted and Tyack 
had left the office Emmons informed Mr. Thomas, that he 
invented the Planing Machine ; and this led to negociations 
between Twogood, Halsted, and Tyack and Emmons, the 
result of which was that for the sum of one thousand dol- 
lars Emmons agreed to go to Washington and get out Let- 
ters Patent and assign them to Twogood, Halsted and 
Tyack. This Emmons did. as he easily might, the law at 
that time requiring no investigation before Letters Patent 
issued : and aided by the knowledge ol Woodworth's ma- 



chine, which was then runnnig in the City of New York, 
he described in his specification things which he never in- 
vented and declared therein that he put the machine there- 
in described in practical operation at Syracuse in 1824 ; 
whereas the machine then and there built by him was nev- 
er in operation, and it was essentially different from the 
machine he patented. Your memorialist begs leave to add 
in this connection that the above facts have been repeat- 
edly proved in Court and that on a trial at Law, before 
Mr. Justice Story and a Jury, at the May term, 1844, of 
the Circuit Court of the United States, held at Boston, 
which trial lasted upwards of fifteen days, and in which 
the validity of Woodworth's Patent was most earnestly 
contested, the Defendant's Counsel, after the production of 
the evidence as to Emmons's Patent abandoned that point 
of the defence, and the learned Judge presiding declared 
that it was rightfully abandoned ; for upon the law and the 
evidence it was impossible to maintain that Emmons was 
entitled to a Patent as the true inventor. Twogood, Hai- 
sted and Tyack having thus obtained this Patent took 
the field against Woodworth and Strong ; and they were 
the authors of the advertisements heretofore mentioned 
and of other notices in the newspapers to the same effect 
which appeared at or near the same time : 

Woodworth and Strong now found themselves in a 
most dangerous position. They were opposed by the 
Builders, and especially by the Journeymen, who thought 
their livelihood would be affected by the machine. They 
were threatened with the destruction of their building and 
machinery by tire and these threats were finally executed 
and their said property destroyed. The machine itself like 
every new invention had some defects which could only 
be removed by a further expenditure of capital. They 
were embarrassed by debt, and now another Patent had 
been taken out ; and they, and all to whom they should sell 
were threatened with litigation. These causes united 



were sufficient to crush them, and having then no proof of 
the fraud which had been practiced on them by Emmons, 
and forced by the necessity of their case, they made a con- 
tract witli Twogood, Halsted and Tyack to assign to them 
the exclusive rights under Woodworth's Patent for the 
Southern parts of the United States, and take from them 
an assignment of the exclusive rights under Emmons Pa- 
tent, for the Northern parts of the United States : 

And your Memorialist further shows, that after having 
made this arrangement with Twogood, Halsted and Tyack, 
Woodworth and Strong encountered great difficulties in 
making sales of their rights, and the said Woodworth real- 
ized but small amounts therefrom, as will fully appear by 
reference to the account of receipts and expenditures filed 
with the Board on the occasion oi the application of your 
memorialist for an extension of the said patent hereinafter 
mentioned. The said Woodworth sold and conveyed 
away all the valuable rights under his said patent in the 
course of about three years subsequent to the date thereof, 
and after that time, and at the time of his decease, was the 
owner of only a few unimportant rights for places where 
there had never been one of the machines in operation. 
He died on the ninth day of February, 1839, in the city of 
New York, where he then resided, his estate being charged 
with heavy debts, and embarrassed by causes growing out 
of his connection with the said patent, and leaving your 
memorialist, his eldest son, and other children who are still 
living. On the fourteenth day of February, 1839, your 
memorialist was duly appointed administrator of his goods 
and estate, and finding that the said patent would expire 
in December, 1842, and that neither the inventor nor his 
children had received any adequate compensation for the 
great benefit which the time, labor, .skill, ingenuity and 
money of the inventor had conferred on the public, he pro- 
ceeded to make the necessary investigations to enable him 
to apply for and obtani an extension of the said patent. 



Your memorialist encountered great difficulties and was 
subjected to very great expenses in making the necessary 
investigations and in instituting the necessary proceedings 
to obtain such extension : 

I. William Woodworth had been obliged to sell to the 
said Strong one half of his patent under the circumstances 
above set forth : 

II. The existence of Emmons' patent, and the partition 
which Woodworth had been forced to agree to, was a seri- 
ous obstacle in the way of your memoi ialist, and rendered 
it necessary carefully to trace out the Iraud practiced in 
order to obtain the same, and to be able to prove the fraud 
w^hen necessary : 

III. It was necessary for your memorialist to make long 
journies to distant parts of the United States, at great ex- 
pense of time and money, to obtain the necessary facts and 
evidence to lay before the Board to satisfy them of his just 
claims to an extension of the said patent : 

IV. It was early suggested to your memorialist that, by 
reason of the phraseology of the latter part of the 18th Sec- 
tion of the Act of Congress of July 4'.h, 1836, assignees of 
rights under the original patent might claim rights under 
the extended patent ; and, inasmuch as William Wood- 
worth, the patentee, had in his lifetime parted with nearly 
the whole of the said letters patent, your memorialist would 
thus be left without any reliable interest, after obtaining at 
great cost of time and money, the extension of the said 
patent ; and although your memorialist could not believe 
such to be the intention of Congress, yet to protect himself 
from this ruinous construction of the law, he was obliged 
at a great expense to purchase up rights of assignees under 
the original patent, before applying for such extension : 

V. There is no express provision in any act of Congress 
authorizing the administrator of a patentee to apply for and 
obtain an extension of a patent, and in consequence of the 
absence of such provision, the Commissioner of Patents 



refused to receive and act upon the application ot your 
memorialist in his said capacity, and by reason of such re- 
fusal, your memorialist was obliged to apply to learned 
counsel for assistance to endeavor to procure your honora- 
ble bodies to enact a law amendatory of the existing laws 
in that particular, and very lieavy expenses were occasioned 
to your memorialist thereby : 

And your Memorialist further shows that, after employ- 
ing counsel , at a large expense, for the purpose last above 
mentioned, it came to his knowedge that the Hon. Felix 
Grundy, while Attorney General of the United States, had 
given an opinion in his official capacity, that it was compe- 
tent for an administrator of a patentee to apply for and ob- 
tain an extension of a patent under the existing acts of 
Congress, and therefore your memorialist applied again to 
the said Commissioner of Patents, and produced the said 
opinion, and the application of your memorialist was then 
received, and your memorialist having complied with all 
the requisitions of the law in that behalf, and all due pro- 
ceedings having been had. and the Secretary of State, 
THE Commissioner of Patents, and the Solicitor 
of the Treasury, having met as a Board designated 
BY Law for such purpose, on the first day of September, 
in the year 1842, at the Patent Office in Washington, being 
the time and place for such meeting, of which public notice 
had been given in the newspapers according to the requi- 
sition of the act of Congress, did then and there proceed to 
hear and consider your Memorialist's said application, and 
on divers days and times to which such hearing and con- 
sideration were adjourned, did actually hear and consider 
the same, and such proceedings were therefore had that 
afterwards, on the sixteenth day of November, 1842, the 
said Board did unanimously adjudge and certify in writing, 
that upon hearing of the said matter it appeared to their 
full and entire satisfaction, having due regard to the public 
interest therein, that it was just and proper that the said 



letters patent should be extended, by reason that the Pa- 
tentee, without neglect on his part, had failed to obtain 
from the sale and use of his invention a reasonable remu- 
neration for the time, ingenuity and expense bestowed upon 
the same and the introduction thereof into use, and there- 
upon the Commissioner of Patents did extend the 
SAID Letters Patent, by making a certificate thereon 
according to law, for the term of seven years from and after 
the expiration of the said original term of fourteen years : 

And your Memorialist further shows that, having thus 
obtained an extension of the letters patent for the benefit of 
the children of the inventor, he hoped to obtain the just 
benefits thereof; but he has wholly failed so to do, and on 
the contrary, has unexpectedly found himself involved in 
serious difiiculties thereby, the causes whereof your memo- 
rialist begs briefly to state : 

The said Uri Emmons having deceased, one Calvin 
Emmons, his brother and administrator, set up a claim to 
have the patent extended, and by correspondence and 
otherwise gave notice, very extensively, to those interested 
in the business of Planing in the United States, that he 
should obtain an extension of this patent, and set it up in 
opposition to Wood worth's patent, and thus the validity of 
Wood worth's patent was questioned and denied, and per- 
sons engaged in the business and likely to purchase rights 
were prevented from doing so : 

The said Calvin Emmons having actually made applica- 
tion for an extension of the said Emmons Patent, it was 
absolutely necessary for your Memorialist to appear and 
show the fraud above detailed ; this your Memorialist did 
and the Board refused to extend the said Emmons Patent ; 
but your Memorialist was subjected to very large expense 
in protecting himself and the public from this imposition. 

By reason of the opposition set up by the said Calvin 
Emmons and those aforesaid with him in his unsuccessful 
attempt to procure an extention of the said Emmons Patent 



9 

your Memoralists title and the validity of his Patent have 
been questioned and denied, and every possible obstacle 
thrown in the way of his making sale or realizing the pro- 
fits of his sale when made. Unfortunately for your me- 
morialist, the efibrts of these persons have been aided by 
two several causes, each of which your memoralist respect- 
fully submits, give him a strong claim on the consideration 
of your Honorable Bodies : 

I. It would be difficult to overrate the utility of this ma- 
chine : attended by three men it is capable of planin g, 
tongueing and grooving ten thousand feet of boards per day, 
reducing them to an equal thickness. The machine is 
not expensive, its cost being about 400 dollars. Thus it 
not only saves a vast amount of labour, but really does 
the work better than it can be done by hand, without a 
ruinous outlay of time and money. The consequence is 
that it is for the interest of great numbers of persons in the 
United States, possessing capital and influence, to destroy 
the exclusive right of your memoralist, and in many places 
extensive combinations have been formed for this purpose ; 
and in all important places the Patent of your memorialist 
has been infringed on, and the most strenuous exertions 
made in court and out of court to attack and destroy his 
rights : 

These attacks have derived much of their force from the 
destruction of the records of the Patent Office by fire, 
rendering your memorialist unable to produce or prove the 
original drawings, filed therein, by William Woodworth, 
and the loss thereof could not be supplied by your memori- 
alist till recently, when a copy was accidentally found in 
the possession of an assignee. 

In consequence of not having access to these drawings 
your memorialist was unable to make it appear that a cer- 
tain use of circular saws, claimed by William Woodworth 
m his specification was really Patentable, and therefore on 
the second day of January, in the year 1843, your memori- 



10 

alist pursuant to the act of Congress on that behalf dis- 
claimed so much of the said claim, as related to the use of 
Circular Saws ; but it turns out upon the discovery of the 
copy of said drawings that the said circular saws were ac- 
tually a part of the organized machine of the said William 
Wood worth : 

The acts of Congress containing no express provision 
authorizing the application by an administrator for an ex- 
tension of a patent, and the decision of the Board not being 
conclusive, your memorialists title has been questioned and 
in many places denied on this ground : 

The latter clause of the I8th Section of July 4thj 
1836, being somewhat obscure, great numbers of persons 
having rights under the original patent have claimed rights 
under the extended patent, thus depriving your memorial- 
ist in effect of all benefit of the said extension. There Has 
been a distressing diversity of decisions by diiFerent Judges 
of the courts of the United States upon this point, and al- 
though your memorialist has put the question in a train to ' 
be settled by the Supreme Court of the United States, y^t 
he is informed that ii cannot be heard before the winter of 
the year 1846, and perhaps not then, as so short a period 
will then remain before the Patent, as extended, will expire 
that scarcely any sales of rights can then be made : 

And your memorialist shows unto your Honorable Bodies 
that by reason of the destruction of the records of the Pa- 
tent Office, and by means of the ambiguities of the Laws 
of Congress, those whose interest it is to destroy rights and 
defeat the benevolent intent of Congress towards a merito- 
rious class of men who have benefitted the public by their 
inventions, without receiving an adequate compensation, 
have been able to involve your memorialist in litigations to 
a most embarrassing extent, while at the same time, they 
have prevented him from making sales of rights, or when 
made have caused the purchasers in very many cases to re- 
fuse to pay the purchase money, and in some cases to 



11 

threaten to institute suits, to recover back what had been 
paid : 

Wherefore your memorialist prays your Honorable Bo- 
dies to relieve him from the losses with which he is unjustly 
threatened, and the embarrasments by which he is surround- 
ed, in consequence of the ambiguities in the acts of. Con- 
gress, by enacting a law which shall in plain and clear 
terms, secure to the inventor and his heirs the benefit of 
the extension of his patent ; and by authorizing the issu- 
ing to your memorialist in his said capacity. Letters Pat- 
tent for the invention of the said William Woodworth, se- 
curing to your memorialist in his said capacity, the exclu- 
sive right, to make, use, and vend the said machine during 
such additional term of time, as will afford to the children 
of the said William Woodworth, a just compensation for 
the time, ingenuity, and expense bestowed by him upon 
the same and the introduction thereof into use : 

And in reference to the enactment of a Law, to remove 
the ambiguities in the acts of Congress, your memorialist 
would respectfully submit that it was the design of Con- 
gress by the said acts, and more especially by so much of 
them as relates to the extension of Letters Patent for an 
additional term, to benefit the inventor and his heirs ; and 
that by the true construction of these laws, the purchaser of 
a right under the original Patent, ought not to have, and 
hath not any, right under the extended patent ; and your 
memorialist has gone to much expense to procure the opi- 
nion of very eminent counsel, so that he might not act un- 
advisedly, or unjustly, in reference to the rights of assign- 
ees ; and he begs leave to submit to the consideration of 
your Honorable Bodies the evidence of his having been 
duly and carefully advised thereon, by subjoining the fol- 
lowing opinions of Counsel : 



12 

Extract from the opinion of Seth P. Staples, Esq., 

" Unless in cases of the most express agreement to that 
effect, the extension of the Patent would not enure to the 
benefit of the assignees. The statute could never have 
contemplated that the assignees should have the benefit of 
the extension, and yet give them no power to make appli- 
cation for such extension. The very fact that the act 
gives to the Patentee the sole right of applying for the ex- 
tension, shows that Congress intended the extension for his 
benefit. It would be equally absurd to give the Patentee 
the right of applying for the extension, and yet no benefit 
of the extension ; and the assignee the benefit of the ex- 
tension, and yet no right to make the application for it. — 
If, upon the whole the commissioners can find, as it seems- 
to me they must, that Wm. Woodworth during his lifetime 
did not receive a compensation for this invention and im- 
provement, in any good measure in proportion to an im- 
mense benefit the improvement has been to the public, 
and through all time will continue to be to the public, it is 
fit and proper that this patent should be extended as re- 
quested by the administrator. 

"SETH P. STAPLES." 

Washington, Nov. Mth, 1842. 

Extract from the opinion of the Honorable Rufus Choate. 
" Let it be observed that the sole object of this section 
(18 Sec. Pat. Laws, July Ath, 1836 ;) is by a general Law 
to effect the object aimed at by so many particular Laws of 
Congress, that is to say to secure an adequate personal ben- 
efit to the inventor. The object is not to benefit the as- 
signee, but to benefit the assignor, unrewarded, inventive 
genius, disheartened, exhausted, forced to sell for a song, 
to give away for daily bread, a great realized idea, for want 
of which, whole nations would be the worse, such genius 
the Section is passed to benefit." 



13 

Extract from the opinion of Hon. Benjamin F. Butler, 
late Attorney General of the United States. 

" I have no hesitation in saying that in my judgment, 
the previous assignee in whole, or in part of a patent ex- 
tended under the 18th Section of the act of July 4th, 1836, 
can claim no right in the extended patent, unless the in- 
strument under which he claims expressly, or, by necessa- 
ry implication provides for the case of an extension, and 
vindicates a clear intention to grant to him a right to, or 
in, such extended patent. 

" This construction of the act is consistent with its true, 
and demanded by its evident intent, which was to secure 
the original patentee reasonable remuneration for the time, 
ingenuity and expense bestowed on his inventions. When 
therefore the assignment is limited to the time of the ori- 
ginal patent, the right to the use of the extended patent, on 
every principle of equity, should be confirmed to the pa- 
tentee, and there is nothing in the act of 1836 to hinder 
such a construction. Signed, 

" B. F. BUTLER." 

Extract from the opinion of C. P. &. B. R. Curtis, Esqs. 

" The design of the law being to benefit the patentee, 
we think an assignment of the patent only, will not pass 
to the assignee such an interest in the extended patent as 
is contemplated by the words of the 18th Section of the act 
of 1836. The words ' to the extent of their respective in- 
terests therein,' mean then- interest in the extended and not 
in the original patent. This is the natural meaning of the 
words, and the only meaning that would be at all consis- 
tent with the plain intent and leading object of the law to 
benefit the patentee. 

" C. P. & B. R. CURTIS. 
•' Boston, Jan. 26th, 1843." 



14 

The foregoing opinion of Messrs. C. P. & B. R. Curtis, 
Esqs, was submitted to Willard Phillips, Esq. the 
Author of the well known work on patents. The follow- 
ing are extracts. 

" I agree entirely in the above opinion. The legal pro- 
perty and right in the extended patent are certainly in the 
patentee, he being the only person on whose application it 
can be granted ; and to say that he takes it merely as trus- 
tee for the benefit of assignees and persons licensed previ- 
ously, would be in direct contradiction of the express pro- 
vision of the act of 1836, for the extension of the period of 
patents. 

"WILLARD PHILLIPS. 

" Boston, Jan. 26th, 1 843." 

Extract from the opinion of L. C. Judson, Esq. 

" The extension is a contingency entirely dependent 
upon application of the patentee and the Board organized 
for the purpose of extending patents, and no interest vests 
in the patentee that can be conveyed, until the application 
is made and the extension granted. 

"L. C. JUDSON. 

" Pittsburgh, June 5th, 1843. 

And your memorialist further shows that this construc- 
tion of the acts of Congress has been adopted by Mr. Jus- 
tice Story, inu case decided by him in the District of 
Maine, and in other cases arising in the District ot Massa- 
chusetts, and by the late Mr. Justice Thompson, in a case 
in the Northern District of New York. But the opposite 
construction has been adopted by Mr. Chief Justice Taney, 
in a case in the District of Maryland. 

And your memorialist would further submit to the con- 
sideration of your Honorable Bodies, that some provision 
might be inserted in the law to secure all the just rights 



15 

both of the assignee and the inventor, by providing for an 
appraisal of machinery held by the assignee for the purpose 
of enjoyins: his right under the patent, and also an appraisal 
of the extension of his exclusive right, and giving to as- 
signees Ihe option of taking and paying for according to 
such appraisal the extended term of the said exclusive 
right, or suffering the inventor to sell it to some other per- 
son, or giving to the patentee or his executor or administra- 
tor the option of taking and paying for according to such 
appraisal such machinery or other property, or failing to 
do so, that the assignee should enjoy his exclusive right in 
the use of his machines under the extended patent : and 
your Memorialist respectfully submits that such a law- 
would be analogous to the " betterment laws" which exist 
in some of the United States, and would be found to be 
just and expedient. 

W. W. WOODWORTH, Adm'r. 
Of W. Woodworth, deceased. 



OCT iR ms 



